World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Guccio Gucci S.p.A. v. James Madison

Case No. D2011-1324

1. The Parties

Complainant is Guccio Gucci S.p.A. of Florence, Italy, represented by Studio Barbero, Italy.

Respondent is James Madison of Shanghai, China.

2. The Domain Names and Registrar

The domain names <borsagucci.net>, <borsegucciitalia.com>, <borsegucciitalia.net>, <borsegucci-it.com>, <borsegucciit.com>, <borsegucci-it.net>, <borsegucciit.net>, <borseguccioutlet.com>, <borseguccioutlet.net>, <borseguccisitoufficiale.com> and <borseguccisitoufficiale.net> (the “Domain Names”) are registered with Name.com LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2011. On August 3, 2011, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Domain Names. On August 3, 2011, Name.com LLC transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 5, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 26, 2011.

The Center appointed Clive L. Elliott as the sole panelist in this matter on September 1, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

According to “WhoIs.name.com”, the Domain Names were registered on December 22, 2010.

5. Parties’ Contentions

A. Complainant

Complainant is Guccio Gucci S.p.A., an Italian Public Limited Company which is a part of the Gucci Group and belongs to the French conglomerate company Pinault-Printemps-Redoute (PPR).

Complainant asserts that the Gucci Fashion House was founded in 1921 by Guccio Gucci, who opened a leather goods company and a small luggage store in Florence. The brand rapidly achieved great success, attracting a sophisticated international clientele interested in the equestrian-inspired collection of bags, trunks, gloves, shoes, and belts, and the borse bit and stirrup motifs became symbols of the fashion house. During the 1950s, the trademark green-red-green web, derived from saddle girths, was a success and is one of the most familiar identifiers of the brand, and during the 1960s, it introduced further products to its range.

Complainant advises that it continued its expansion abroad, opening stores in London, Palm Beach, Paris and Beverly Hills and around the mid-1960s, it adopted the interlocking double "G" logo. During the 1970s and years following, Complainant continued its global expansion targeting the Far East, opening stores in Tokyo and Hong Kong, China with increased and diversified production.

In 1995, Complainant successfully converted into an entirely publicly-owned company and was elected as the "European Company of the year" by the European Business Press Federation for its economic and financial performance, strategic vision, and quality of management. In 1999, Complainant entered into a strategic alliance with Pinault-Printemps-Redoute and transformed itself from a single-brand company into one of the world's leading multi-brand luxury goods companies.

Complainant advises that it is the owner of thousands of national and international trademark registrations worldwide, including the Italian registration of the mark GUCCI in January 1977, the international registration in March 1977 and the Community trademark registration in November 1998. Complainant contends that it is also the owner of several trademark registrations for GUCCI in China, where Respondent is apparently based, including the Chinese Trademark Registrations for GUCCI in May 1983.

Complainant is the owner of a broad array of trademark registrations worldwide for GUCCI, both alone and in combination with other word and/or device elements. The trademark has regularly been used by Complainant for more than 80 years in connection with products in the high-fashion and leather industry, including ready-to-wear clothes, handbags, small leather goods, luggage, shoes, jewelry, gifts, eyewear, and fragrances. Complainant contends that the logo GUCCI is a famous trademark and Complainant enjoys a worldwide reputation and goodwill as one of the leading manufacturers of fashion products. Complainant states that, according to the Interbrand ranking of 2010, the GUCCI brand was 44th amongst the Best Global Brands.

Complainant submits that in light of its substantial investments in advertising, it’s marketing and sales, its consistent use of the logo GUCCI for decades, and its impressive client base across all product groups, GUCCI is an extremely well-known trademark worldwide. It also asserts that the trademark GUCCI was, and presently is, supported by intensive advertising campaigns worldwide and dedicated web sites, such as the main site “www.gucci.com”, “www.gucciconnect.com” and “www.gucciparfums.com”.

Complainant asserts that Respondent registered the Domain Names, without authorization by Complainant, on December 22, 2010. Complainant contends that at the time of the drafting of this Complaint, the Domain Names <borsagucci.net>, <borsegucci-it.com>, <borsegucciit.net>, <borsegucci-it.net>, <borseguccioutlet.com>, <borseguccioutlet.net> and <borseguccisitoufficiale.net> redirect users to web pages where Internet users can find a list of sponsored links to various third party web sites dedicated to the sales of bags and accessories. The Domain Names <borsegucciit.com>, <borsegucciitalia.com>, <borsegucciitalia.net> and <borseguccisitoufficiale.com> are directed to a web site - in the Italian language - published at the URL “www.borsegucciitalia.net”, where an imitation of Gucci Interlocking G mark and images used by Complainant in its advertising campaigns are displayed and prima facie counterfeit Gucci-branded products are offered for sale. The title of the web site is "Gucci Sito Ufficiale, Borse Gucci, Gucci Online Boutique" ("Gucci Official Site, Gucci Bags, Gucci Online Boutique").

Upon becoming aware of the registration and use of the Domain Names, in July 2011, Complainant advises that it instructed its legal representative to serve Respondent with a cease and desist letter.

Since the postal address disclosed in the WhoIs database "Municipality of Shanghai Huang Pu Shanghai 200000 CHINA" appeared to be incomplete, a cease and desist letter was served, on July 18, 2011, on Respondent via email to the email address indicated in the WhoIs database ([…]@gmail.com), requesting that Respondent cease any use of the Domain Names and transfer them to Complainant. No reply was received by Respondent, despite the fact that the communication via email was correctly delivered to Respondent's email address. In the absence of Respondent's compliance with Complainant's demands, Complainant advises that it instructed its representatives to file the present Complaint.

Complainant submits that the Domain Names registered by Respondent are confusingly similar to trademarks in which Complainant has rights. The Domain Names incorporate the whole of Complainant's GUCCI trademark. The fact that the Domain Names include the non-distinctive elements "borsa" and "borse" (which are the Italian translations of "bag" and "bags"), "sito" (Italian for "site"), "outlet", "Italia", "ufficiale" (which corresponds to the English adjective "official"), "it" and a hyphen, does not affect the confusing similarity. Furthermore, in the present case, some of the terms selected by Respondent for the registration of the Domain Names are particularly apt to increase the likelihood of confusion and to induce Internet users to believe that there is an association between the Domain Names and Complainant. In fact, the terms "borsa" and "borse" are descriptive of products made by Complainant; the term "outlet" recalls a place where Complainant's products are sold; the name "Italia" refers to Complainant's country; and the combination of the two words "sito" and "ufficiale" is clearly meant to induce users to believe that the Domain Names redirect to Complainant's official web sites.

Complainant asserts that Respondent is not a licensee, an authorized agent of Complainant, nor authorized to use Complainant's trademark GUCCI and the mere registration, or earlier registration, does not establish rights or legitimate interests in the Domain Names. Complainant also asserts that as well as there being no evidence showing that Respondent, whose name is James Madison, might be commonly known by the Domain Names as an individual, business or other organization, nor has Respondent provided Complainant with any evidence of its use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services before any notice of the dispute.

Complainant submits that in light of the fact that the registered trademark GUCCI is well-known and has been used since as early as 1921, it is inconceivable that Respondent was unaware of the existence of Complainant or Complainant's trademark GUCCI, with which the Domain Names are confusingly similar, at the time of the registration of the Domain Names. Complainant further submits that as an additional circumstance evidencing bad faith, Respondent has registered and is actively using several domain names confusingly similar to other registered and well-known trademarks, such as the domain names <borsaprada.net>, <borsepradasitoufficiale.com>, <pradasitoufficiale.net> and <chanelsitoufficiale.net>.

Complainant suggests that Respondent’s lack of response to the cease and desist letter sent by Complainant’s legal representative and failure to respond and file a Response to the Complaint is further support for an inference of bad faith. Complainant submits that a further example of Respondent’s bad faith registration is that Respondent registered the Domain Names by using inaccurate and incomplete contact information.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following:

- The Domain Names registered by Respondent are identical or confusingly similar to the trademarks in which Complainant has rights; and

- Respondent has no rights or legitimate interests in respect of the Domain Names; and

- The Domain Names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.

Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.

A. Identical or Confusingly Similar

It is clear from the evidence that Complainant is the owner of a range of trademarks worldwide for GUCCI, both alone and in combination with other word and/or device elements, hereinafter the "Complainant's Trademark" and that Complainant has rights in Complainant's Trademark. Complainant has traded extensively throughout the world and has registered or applied for registration of the GUCCI trademark in a number of countries. There is clear support for the assertion that Complainant has substantial recognition and reputation internationally in Complainant’s Trademark.

The Domain Names are clearly a combination of the GUCCI element with other largely descriptive and/or non-distinctive words, terms or letters, including, for example, the elements "borsa" and "borse" (Italian translations of "bag" and "bags"), "sito" (Italian for "site"), "outlet", "Italia", "ufficiale" (which corresponds to the English word "official"). They are, on their face, confusingly similar to Complainant's Trademark as used and/or registered by Complainant in the course of its extensive international business.

On this basis it is found Complainant's Trademark is a protectable trademark to which the Domain Names are confusingly similar. Accordingly, this element is clearly made out.

B. Rights or Legitimate Interests

It is difficult to understand why Respondent chose the Domain Names other than as a reference to GUCCI and thus Complainant and its well-known goods and indeed their wider “cachet”. Nor can it be envisaged that to the average Internet user and consumer GUCCI has any meaning, other than as an indication of origin of Complainant’s products.

Complainant asserts that certain of the Domain Names redirect users to web pages where Internet users can find a list of sponsored links to various third party web sites, dedicated to the sales of bags and accessories, while with other domain names comprising the Domain Names they are said to be directed to an Italian language web site where allegedly imitation and/or counterfeit Gucci-branded products are offered for sale. While Complainant quite properly alleges no more than that this appears to be the prima facie position Respondent, by failing to challenge this assertion, effectively concedes that it may well be correct and the Panel draws the available inference that it is correct.

Given the substantial exposure, registration and use of Complainant’s Trademark the Panel finds that there is no indication that Respondent has any rights or legitimate interests in respect of the Domain Names. The links to the web sites with the Domain Names, or some of them, to other web sites, which appear to sell counterfeit goods branded GUCCI confirms that the Domain Names are being used for improper purposes or at least purposes inconsistent with a legitimate interest or right.

As such it is found that this element is made out.

C. Registered and Used in Bad Faith

Given the substantial reputation and the undoubted goodwill in Complainant's Trademark and for the reasons given above it is difficult to see how Respondent can claim to have registered and used the Domain Names in good faith. Accordingly, the Panel finds that the Domain Names were registered and are being used in bad faith as defined in paragraph 4(b) of the Policy.

It is thus found that this element is made out.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <borsagucci.net>, <borsegucciitalia.com>, <borsegucciitalia.net>, <borsegucci-it.com>, <borsegucciit.com>, <borsegucci-it.net>, <borsegucciit.net>,<borseguccioutlet.com>, <borseguccioutlet.net>, <borseguccisitoufficiale.com> and <borseguccisitoufficiale.net> be transferred to Complainant.

Clive L. Elliott
Sole Panelist
Dated: September 19, 2011

 

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